Home -> Law Blog Directory -> Intellectual Property Law Blogs -> Two-Seventy-One Patent Blog

Intellectual Property Law

: Two-Seventy-One Patent Blog

Say Hello To 2009 Patent Reform - Dual Bills Introduced In House, Senate

By Peter Zura

As expected, new patent reform legislation was introduced today as identical bills in the House and Senate. Senator Orrin Hatch (R-Utah) joins Leahy as a co-sponsor of the Senate bill, while House Judiciary Committee Chairman John Conyers (D-Mich.) and ranking minority member Lamar Smith (R-Texas) are co-sponsoring the House version.

For the most part, the legislation is largely the same as 2008. According to Leahy, "[w]e kept the language the same because we want to start where we left off and give us something to work on."

The notable omissions in the latest draft include:

? No broad USPTO rulemaking authority
? No "Check-21" exemption;
? No "Applicant Quality Submission" provision that would have required all applicants to submit and characterize prior art searches;
? No "automatic publication" at 18 months for all applications;
? No provisions on inequitable conduct.

Highlights include:

? "Hard" First-To-File Rule - providing no grace period, the first person to file gets the patent. Secret prior art (i.e., 102(e)) cannot be sworn behind.

? Damage Apportionment - Damages are determined by looking at the invention?s ?specific contribution over the prior art.? Also, reasonable royalties may be calculated by looking at the price of licensing a ?similar noninfringing substitute in the relative market.?

? Willfulness - Treble Damages will be limited to instances where the patent owner presents clear and convincing evidence that the defendant(s) acted with "objective recklessness" when infringing (intentionally copied, continued conduct that was not "colorably different" from previous infringement).

? Reexamination - expands reexamination requests so that "any person at any time may file a request for reexamination by the Office of any claim on a patent on the basis of any prior art or documentary evidence."

? Post Grant Review - "??A post-grant proceeding may be instituted under this chapter pursuant to a cancellation petition filed under section 321 only if???(1) the petition is filed not later than 12 months after the issuance of the patent or a reissue patent, as the case may be." [as the case may be?]

? Interlocutory Appeals - "of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35. Application for an appeal under paragraph (3) shall be made to the court within 10 days after entry of the order or decree. The district court shall have discretion whether to approve the application and, if so, whether to stay proceedings in the district court during the pendency of such appeal.??

? Venue - ??(1) where the defendant has its principal place of business or in the location or place in which the defendant is incorporated or formed . . . (2) where the defendant has committed substantial acts of infringement and has a regular and established physical facility that the defendant controls and that constitutes a substantial portion of the operations of the defendant; (3) where the primary plaintiff resides, if the primary plaintiff in the action is???(A) an institution of higher education . . . or (B) a nonprofit organization . . . or (4) where the plaintiff resides, if the sole plaintiff in the action is an individual inventor . . ."

While the chances of passage is unknown, there is a large chance that further and substantial revisions will be made. Co-sponsor Orrin Hatch commented at the news conference that "[w]e all agree that more work needs to be done."

Download a Copy of the draft here (link)

See

CNET - "Controversial provisions remain in patent reform bill"

Reuters - "Congress takes up patent redo, damages fight looms"

CNNMoney.com - "Congress To Try Again On Patent Reform"

Full post as published by Two-Seventy-One Patent Blog on March 03, 2009 (boomark / email).